In my post back in March 2018, I analyzed an upward change in allowance rates in the 36XX art units based on my practitioner’s observation that inventions were finally beginning to be more frequently found eligible for patenting following a string of pro-eligibility Federal Circuit decisions.
It has now been 1.5 years since the USPTO issued its 2019 Revised Patent Subject Matter Eligibility Guidance in January 2019, specifying that patent prosecution henceforth should cite to the Guidance rather than directly to caselaw, and over half a year since the USPTO’s follow-on October 2019 Patent Eligibility Guidance Update. Since the 2019 Guidance represents one of the most significant changes in patent eligibility analysis since the Supreme Court’s 2014 Alice decision, I thought it was high time for another inquiry into the state of eligibility findings in the USPTO.
The current inquiry broadens my 2018 survey to include additional common technological art units—namely, the 21XX, 24XX, 26XX and 28XX tech centers—as well as 36XX. As before, I calculated allowance-to-abandonment ratios for each of the constituent art units—as well as aggregates for the tech centers as a whole—and ratios of allowance-to-abandonment ratios between different years. (Since patent law has had few substantive changes other than the analysis of eligibility under § 101 after Alice—and since no significant economic upheavals took place during the timeframe I am examining (2013-2019)—I consider it a safe assumption that changes in patent allowance rates are primarily due to changing standards in eligibility law.)
For every one of the tech centers whose data I analyzed, the aggregate allowance-to-abandonment ratio was higher in 2019 than in any of the years 2013-2018:
Seeing the (expected) large uptick in allowance rates over the last year, I was also curious to measure the magnitude of the allowance rate changes stemming from the USPTO promulgation of its prosecution Guidance relative to those stemming from more favorable Federal Circuit caselaw. I considered the year 2016 to be the breakthrough “second-wave” year for pro-eligibility decisions such as Enfish, BASCOM and McRO, comparing it to 2017 (the year in which its effects were largely felt). Similarly, I used the year 2019 as the year of the USPTO’s Guidance, and since the Guidance came out in January 2019 and was put into practice more quickly than Federal Circuit caselaw, I compared 2019 to 2018 (the final year in which caselaw was cited for eligibility issues during prosecution).
With these rough-and-ready generalizations defined, for each tech center and each constituent art unit, I compared the allowance-to-abandonment ratio change between 2018 and 2019 (representing the impact of the USPTO Guidance) to the same change between 2016 and 2017 (representing the impact of more favorable Federal Circuit caselaw). For tech centers 21XX, 24XX, 26XX, 28XX and 36XX, the aggregate ratios were 1.63, 1.08, 1.20, 1.24 and 0.99, respectively. (For example, the 1.63 ratio for the 21XX tech center indicates that the increase in allowance rates from 2018 to 2019 was 63% larger than the increase from 2016 to 2017.) These trends were more sharply accentuated in specific art units (e.g., the financially-oriented 3628) that had been most dramatically affected by Alice in 2014, and appear only to be accelerating based on the (incomplete) 2020 data. Thus, the data suggest that the USPTO Guidance had a larger impact than the shift in Federal Circuit caselaw in moving towards somewhat more liberal eligibility findings.
In any case—to state the obvious—although eligibility rates declined for several years post-Alice, they have been trending significantly upward for the past three years. And given the current USPTO leadership and other factors, eligibility rates seem unlikely to reverse course and trend downward again in the near future.
(Many thanks to my colleague Casey Silk for collecting the data used in this analysis.)
*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.